Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Withdrawn Rejections:
Applicant's amendments and arguments filed on 09/22/2025 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Any rejection and/or objection not specifically addressed below is herein withdrawn.
The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
Claims 1-20 are pending, claims 1-8 and 11-20 are under examination.
Claims Objection
Claims 7 and 17 are objected for depending on rejected claims 1 and 11, respectively.
Claims 11 and 19 recite “form” which appears typo of “from”. Proper correction is required.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-2, 6, 8, 11-12, 16, 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Basu et al. (US20100102272) in view of Althoff et al. (US20080173676).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Basu et al. teaches An azeotrope-like mixture consisting essentially of chlorotrifluoropropene and at least one component selected from the group consisting of a C1 -C3 alcohol, a C5-C6 hydrocarbon, a halogenated hydrocarbon, methylal, methyl acetone, water, nitromethane, and combinations thereof (abstract). Another aspect of the invention provides a sprayable composition comprising an azeotrope-like mixture as described herein, an active ingredient, and, optionally, inert ingredients and/or solvents and aerosol propellants (page 1, [0011]). Basu et al. teaches that azeotrope-like
compositions are formed upon mixing 1-chloro-3,3,3-trifluoropropene ("HFO-1233zd") with a second component selected from the group consisting of a C1 -C3 alcohol (page 1, [0007]). Thus, HFO-1233zd is the same as HCFO-1233zd in applicant’s claim according to applicant’s specification ([0008]). In a preferred embodiment, the azeotrope-like composition comprises effective amounts of trans-HFO-1233zd and ethanol. More preferably, these binary azeotrope-like compositions consist essentially of about 85 to about 99 .9 wt. % trans-HFO-1233zd and from about 0.1 to about 15 wt.% ethanol, more preferably from about 92 to about 99.9 wt.% trans-HFO-1233zd and about 0.1 to about 8 wt. % ethanol, and even more preferably from about 96 to about 99 .9 wt. % trans-HFO-1233zd and from about 0.1 to about 4 wt. % ethanol. Preferably, the trans-HFO-1233zd/ethanol compositions of the present invention have a normal boiling point of about 18.1°C ±1°C. at ambient pressure (page 3, [0039-0041]). In a preferred embodiment, the azeotrope-like compositions of this invention may be used as solvents in sprayable compositions, either alone or in combination with other known propellants. The solvent composition comprises, more preferably consists essentially of, and, even more preferably, consists of the azeotrope-like compositions of the invention. In certain embodiments, the sprayable composition is an aerosol. In certain preferred embodiments, provided is a sprayable composition comprising a solvent as described above, an active ingredient, and optionally, other components such as inert ingredients, solvents, and the like. Suitable active materials to be sprayed include, without limitation, cosmetic materials such as deodorants, perfumes, hair sprays, cleaning solvents, lubricants, insecticides as well as medicinal materials, such as anti-asthma medications (page 9, [0116-0118]). The invention overcomes the aforementioned shortcomings by providing azeotrope-like compositions that are, in preferred embodiments, substantially free of CFCs, HCFCs, and HFCs and have very low global warming potentials have low ozone depletion potential, and which exhibit relatively constant boiling point characteristics (page 2, [0020]).
Althoff et al. teaches an aerosol fluid dispenser includes a movable actuator for controlling dispensing of the liquid or fluid product from the dispenser and a locking mechanism for locking the actuator (abstract). In a first aspect of the present invention, there is provided an aerosol fluid dispenser comprising a rigid container defining a chamber for storing a fluid that is to be dispensed; a valve assembly including a valve cup and a movable valve stem, the valve cup connected to the container and defining an opening in fluid communication with the chamber, and the movable valve stem disposed in the opening for selectively closing the opening and retaining the fluid in the container at a pressure that is greater than atmospheric pressure; a shoulder connected to the container and including a central opening and a slot extending from the central opening; a spray through actuator received in the central opening of the shoulder and including an outlet for dispensing the fluid, an upper platform, a stem socket depending downwardly from the upper platform and an outer wall extending downwardly from the upper platform and at least substantially surrounding the stem socket, the stem socket defining a passage that receives the valve stem and is in communication with the outlet, the stem socket including a spline that is received in the slot to inhibit rotational movement of the actuator with respect to the shoulder; and a locking ring rotatably connected to the shoulder and cooperating with the actuator to limit axial movement of the actuator ([0007]). With reference to the embodiment depicted in FIG. 1, a dispenser 10 contains a liquid cosmetic product, which can include hair spray, body spray, deodorant, antiperspirant and fragrances such as perfume and cologne. The dispenser 10 contains the liquid cosmetic product under pressure, i.e. a pressure that is greater than atmospheric pressure, similar to a known aerosol container so that the liquid cosmetic product can be quickly dispensed from the dispenser. The dispenser 10 includes a container 12, an actuator 14, and a locking ring 16. The container 12, the actuator 14 and the locking ring 16 are attached to one another and form a single unit that is disposed or recycled once the liquid cosmetic product has been dispensed from the dispenser ([0029]).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
The difference between the instant application and Basu et al. is that Basu et al. do not expressly teach aerosol container with opening for selectively releasing the contents. This deficiency in Basu et al. is cured by the teachings of Althoff et al.
Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Basu et al. , as suggested by Althoff et al., and produce the instant invention.
One of ordinary skill in the art would have been motivated to use aerosol fluid dispenser with opening for selectively releasing the contents to spray the aerosol cosmetic composition to skin because aerosol fluid dispenser with opening for selectively releasing the contents is a suitable device to spray cosmetic composition as suggested by Althoff et al. MPEP 2143 D, it is prima facie obviousness for applying a known technique to a known method ready for improvement to yield predictable results. Therefore, it is obvious for one of ordinary’s kill in the art to use aerosol fluid dispenser with opening for selectively releasing the contents to spray the aerosol cosmetic composition to skin and produce instant claimed invention with reasonable expectation of success.
Regarding the limitation of about 25%-about 75% of trans-HFO-1233zd and about 25%-about 75% of ethanol in claim 1, 11, 19, claims 6, 8 and 16, Basu et al. teaches binary azeotrope-like compositions consist essentially of about 85 to about 99.9 wt. % trans-HFO-1233zd and from about 0.1 to about 15 wt.% ethanol. When “about” is interpreted broadly, about 25%-about 75% is regarded as overlapped with about 85 to about 99.9 wt%. The term “about 25%- about 75%” can be broadly interpreted as to overlap with “about 85 to about 99.9 wt%. ", because use of the word 'about' in a claim is appropriate where the claim contains a range of components with no absolute boundaries, and is only limited to the extent that prior art exists which would limit broad interpretation of the claim. See Amgen, Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200, 1217-1218, 18 USPQ2d 1016 (Fed. Cir. 1991). In the instant case, there is no prior art teaching that would limit the range recited in claims solely to between 25% and 75%. Accordingly, the range recited by claims is interpreted broadly. Thus, 85 to about 99.9 wt. % reasonably overlapped with the claimed " about 25%-about75%”. For the same rational,
Regarding claim 1 and 11, since the trans-HFO-1233zd/ethanol compositions of the present invention have a normal boiling point of about 18.1°C ±1°C. at ambient pressure is much lower than the boiling point of ethanol of about 78°C, the drying time after spraying is expected to be at least about 70% shorter than the drying time when ethanol is used as propellant (carrier).
Regarding claims 11 and 19, “the spray pattern resulting from spraying is a uniformly distributed spray pattern with not dripping when measured by spraying onto black construction paper for five (5) seconds with the nozzle held 12 inches from the paper under ambient conditions” is regarded as results from prior art process. In summary, although the reference is silent about all the functional properties instantly claimed, it does not appear that the claim language or limitations result in a manipulative difference in the method steps when compared to the prior art disclosure. See Bristol-Myers Squibb Company v. Ben Venue Laboratories, 58 USPQ2d 1508 (CAFC 2001). “It is a general rule that merely discovering and claiming a new benefit of an old process cannot render the process again patentable.” In re Woodruff, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990). Granting a patent on the discovery of an unknown but inherent function would remove from the public that which is in the public domain by virtue of its inclusion in, or obviousness from, the prior art. In re Baxter Travenol Labs, 21 USPQ2d 1281 (Fed. Cir. 1991). See M.P.E.P. 2145. On this record, it is reasonable to conclude that the same user is being administered the same composition by the same mode of administration in the same amount in both the instant claims and the prior art reference. The fact that Applicant may have discovered yet another beneficial effect from the method set forth in the prior art does not mean that they are entitled to receive a patent on that method. Thus, prior art teaches, either expressly or inherently implied, each and every limitation of the instant claims. it remains the Examiner's position that the instantly claimed method is obvious.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claims 3-5 and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Basu et al. (US20100102272) in view of Althoff et al. (US20080173676), as applied of the above 103 rejection for claims 1-2, 6, 8, 11-12, 16, 18-20, further in view of Braeutigam (US20070053847), Hall (US5840289) and Shinozawa (US4450151).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Basu et al. and Althoff et al. teaching have already been discussed in the above 103 rejections and are incorporated herein by reference.
Braeutigam teaches styling wax composition applied as aerosol spray with improved styling benefits, especially with excellent shine and hold and also excellent elasticity (abstract). The composition comprises propellant from 30-65% (page 1, [0011]). The wax includes fatty alcohol ethoxylates (page 2, [[0014]).
Hall teaches A suspension antiperspirant aerosol composition for topical application to the human skin comprising 1-30% by weight of solid activated aluminum chlorohydrate, 1-30% by weight of a liquid masking agent, 30-90% of a propellant for expelling the composition from a container and a carrier (abstract).
Shinozawa teaches A powder aerosol composition is obtained by first preparing a suspension consisting of a hydrophobic powdered substance having its pH adjusted to fall within the range 5 to 9, alcohol and water, adding, if required by the desired powder system, an intentional medicine and other auxiliary agents to the suspension and mixing the suspension with 5 to 40 wt % of a propellant in an aerosol container. The thusly produced composition has an improved safety in application, prevents flying properties, has an improved adhesion to the skin and can be produced inexpensively. Thus, the composition is best suited for use in applications such as baby powder, dry shampoo, water-eczema remedy and antiperspirant (abstract). A hydrophobic powdered substance having a pH value of 5 to 9 and a particle size of 70 to 325 mesh may 65 be used as the powdered substance. One or more substances selected from the group consisting of talc, Celite, kaolin, red oxide, rice starch (column 1, line 64-68).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
The difference between the instant application and Basu et al. is that Basu et al. do not expressly teach hair spray with active components enhance the shine or hold the hair, antiperspirant with aluminum salts, dry shampoo with starch. This deficiency in Basu et al. is cured by the teachings of Braeutigam, Hall and Shinozawa.
Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Basu et al., as suggested by Braeutigam, Hall and Shinozawa, and produce the instant invention.
One of ordinary skill in the art would have been motivated to use binary azeotrope-like compositions consist essentially of about 85 to about 99 .9 wt. % trans-HFO-1233zd and from about 0.1 to about 15 wt.% ethanol as propellant in the hair spray composition comprising wax for hair shine and hold of hair; in the antiperspirant composition comprising aluminum salt, in the dry shampoo composition comprising starch because they are suitable cosmetic composition for spray. MPEP 2144.07. Under guidance from Braeutigam teaching hair spray composition comprising wax for hair shine and hold of hair is suitable spray with propellant; Hall teaching antiperspirant composition comprising aluminum salt is suitable cosmetic composition for spray with propellant; Shinozawa teaching dry shampoo comprising starch as suitable cosmetic composition for spray with propellant; it is obvious for one of ordinary skill in the art to use binary azeotrope-like compositions consist essentially of about 85 to about 99 .9 wt. % trans-HFO-1233zd and from about 0.1 to about 15 wt.% ethanol as propellant in the hair spray composition comprising wax for hair shine and hold of hair; in the antiperspirant composition comprising aluminum salt, in the dry shampoo composition comprising starch and produce instant claimed invention with reasonable expectation of success.
Regarding claim 5, prior arts teach starch, which is expected to absorb oil from starch.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-6, 8, 11-16 and 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-36 of U.S. Patent No. 8163196 in view of Basu et al. (US20100102272), Althoff et al. (US20080173676), Braeutigam (US20070053847), Hall (US5840289) and Shinozawa (US4450151). The reference patent teaches binary azeotrope-like compositions consist essentially of trans-HFO-1233zd and ethanol, in view of those secondary references, according to the same rational in the above 103 rejection, applicant’s claimed invention is obvious.
Conclusion
No claim is allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANFENG SONG. Ph.D. whose telephone number is (571)270-1978. The examiner can normally be reached M-F 8-5.
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/JIANFENG SONG/Primary Examiner, Art Unit 1613